WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zurich American Insurance Company v. Ted Chen
Case No. D2007-0441
1. The Parties
Complainant is Zurich American Insurance Company, Schaumburg, Illinois, United States of America, represented by David C. Jenkins, Eckert Seamans Cherin & Mellott LLC, Pittsburgh, Pennsylvania, United States of America.
Respondent is Ted Chen, Freemont, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (“Moniker”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March�22,�2007. On March�26,�2007, the Center transmitted by email to Moniker a request for registrar verification in connection with the domain name at issue. On March�30,�2007, Moniker transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified, on April�11,�2007, that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April�11,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May�1,�2007. Respondent did not submit any response. Accordingly, the Center notified Respondent of his default on May�2,�2007.
The Center appointed Steven L. Snyder as the sole panelist in this matter on May�14,�2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The company that is now known as Zurich Financial Services was founded in 1872. Less than twenty years later, the company was licensed throughout Europe. In 1912, the Z�rich Allgemeine Unfall-&Haftpflicht-Versicherungs-Aktiengesellschaft (Z�rich General Accident & Liability Insurance Corporation) crossed the Atlantic, lost its umlaut, and began conducting business in the United States of America. A dozen years later, the company spread its operations to Canada and the United Kingdom.
Today Zurich Financial Services employs approximately 60,000 employees, has offices in more than sixty countries, and offers insurance products to individuals and businesses. One of Zurich Financial Services’ many companies is Complainant, Zurich American Insurance Company. Complainant’s headquarters are in Schaumburg, Illinois, one of the many affluent suburban communities that surround Chicago.
Complainant claims ownership of numerous service marks which incorporate the word “Zurich” and are used in connection with insurance and other financial services, including: (a) ZURICH for “underwriting of accident and health insurance,” USPTO reg. no. 1,213,689; (b) ZURICH-AMERICAN for “underwriting of property and casualty insurance,” USTPO reg. no. 1,372,968; and (c) ZURICH for “insurance underwriting in the fields of liability, damage, annuity and reinsurance; [financial guarantee and] surety services; and risk management,” USPTO reg. no. 1,941,954. Complementing the service mark portfolio are numerous domain name registrations owned within the Zurich Financial Services family, including and .
In December 2006, a person allegedly named Ted Chen registered the disputed domain name . The domain name leads to a website entitled, in large letters across the top, “Zurich Insurance Chicago.” Devoid of any substantive content, the website simply features links to real estate agents and insurance brokers. Though many of these agents and brokers are located on the shores of Lake Zurich, their lake is in Illinois, not Switzerland, and they have no connection to Complainant or its corporate family.
5. Parties’ Contentions
A. Complainant
In fewer than two pages, Complainant succinctly makes three points.
First, Complainant contends that the disputed domain name is confusingly similar to Complainant’s registered marks. The fact that the disputed domain name contains the word “Chicago,” unlike Complainant’s claimed marks, does not ease the confusion. Quoting Koninklijke Philips Electronics NV v. Gopan P.K.,WIPO Case No. D2001-0171, Complainant argues that the addition of a geographical identifier does not distinguish a domain name from a mark. This is because the identifier “would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that area].”
Second, Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. Speaking for itself, Complainant states that it has not licensed or permitted Respondent to use any of its marks. Speaking for Respondent, Complainant states that Mr. Chen apparently is not known by the domain name (i.e. he is not called “Mr. Zurich Insurance Chicago”), nor does he appear to have any plans to use the name in association with a bona fide offering of good or services.
Third, Complainant maintains that Respondent, in bad faith, registered and is using the disputed domain name. As evidence of this, Complainant points to the fact that the domain name leads to a website that provides “advertisements and links to insurance providers that are not affiliated with the Complainant.”
Accordingly, Complainant contends the disputed domain name should be transferred to its possession.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy requires that the complainant “must prove that each of these three elements are present”: First, that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Second, that the respondent has “no rights or legitimate interests in respect of the domain name.” Third, that the disputed “domain name has been registered and is being used in bad faith.” See paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
While Zurich, Illinois and Zurich, Switzerland are not confusingly similar (except to some airport baggage handlers), the disputed domain name and Complainant’s marks certainly are confusingly similar. The disputed domain name is . Complainant is known as the Zurich American Insurance Company, it claims ownership of the ZURICH mark in connection with insurance underwriting, and its headquarters are in metro Chicago.
The only question worth any consideration is whether Complainant owns the marks listed in its Complaint, as it has contended it does. According to the United States Patent & Trademark Office (“USPTO”), Complainant assigned the registrations for those marks to the Zurich Insurance Company. Even if Complainant has been a bit loose in its claim of ownership, it undoubtedly has an explicit or implicit license to use the ZURICH marks: Complainant and the Zurich Insurance Company are both part of the Zurich Financial Services companies. Other Panels have recognized that licensees may have protectable rights in marks, even if they do not own the registrations for those marks. See Toyota Motor Credit Corp. v. World Funding Group, Inc., WIPO Case No. D2001-0674.
The Panel finds the disputed domain name is confusingly similar to a service mark in which Complainant has rights.
B. Rights or Legitimate Interests
Theoretically, Respondent could prove rights or legitimate interests to the disputed domain name. The Policy lists several ways this may be done, given the proper evidence. See Policy 4(c). But there is no need to theorize how Respondent could prove his case: Respondent has chosen not to participate in this Proceeding and Complainant has outlined a credible argument.
According to Complainant, it has not permitted Respondent to use any of its marks or to apply for any domain name incorporating those marks. Complainant further contends that the USPTO website does not show any relevant marks registered to Respondent. Finally, Complainant has introduced results of an Internet search conducted on a popular search engine. This search failed to uncover any relationship between Respondent and the mark.
Though the Panel cannot verify Complainant’s first contention, it has no reason to doubt its veracity. See ACCOR v. Jose Manuel Fernandez Garcia, WIPO Case No. D2002-0988. The Panel has verified the second and third contentions and finds Complainant has proven that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under the Policy, evidence of the registration and use of a domain name in bad faith may be shown, without limitation, by the respondent’s intentional use of a confusing domain name to attract, for commercial gain, Internet users to a website. See Policy � 4(b)(iv).
Given the lack of discovery in these proceedings, Complainant lacks direct evidence to support its contention that the Respondent “commercially benefits from the misleading domain name by redirecting unsuspecting Internet users to various third party commercial websites.” But the circumstantial case is strong: Respondent’s domain name is confusingly similar to Complainant’s mark and Respondent’s website provides numerous links to third party websites, many of which are for insurance services. Common sense suggests that Respondent is not providing those links purely out of the goodness of his heart; it is well known that websites can generate revenue from “pay per click” arrangements. See The Boucher Group, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-1463.
Complaint may lack enough data on Respondent to accurately employ its actuarial tables, but Complainant has enough data to establish that Respondent registered and is using the disputed domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to Complainant.
Steven L. Snyder
Sole Panelist
Date: May�28,�2007
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